DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the Markush listings “glycerin” and “glycerol” in lines 2-3. This renders the claim vague and indefinite, since they are the same compound, and one of them should be deleted. Appropriate correction and/or clarification is required.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing two different non-aqueous solvent groups within the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8, 10-12 and 14-20 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhu, US 2011/0278194.
Zhu, US 2011/0278194, discloses a concentrated hard surface treatment composition comprising an anionic surfactant, an alkanolamine, an organic solvent, lactic acid, a nonionic surfactant, adjunct ingredients, and up to 5% by weight of water, wherein the composition is diluted with water and is contained within a water soluble pouch or sachet (see abstract and paragraphs 5-17). It is further taught by Zhu that the composition contains 0.01-30% by weight of an anionic surfactant, such as alkyl ether sulfates (see paragraphs 19-24 and Table 2), that suitable organic solvents include glycol ether solvents (see paragraphs 29-33), that the composition contains 25-75% by weight of an organic acid, preferably lactic acid (see paragraphs 34-37), that the pH of the composition is less than 7 (see paragraph 38), that the composition contains up to 5% by weight of adjunct ingredients, such as chelating agents (see paragraphs 46-54), that the water-soluble container is made up of polyvinyl alcohol or a cellulose ether (see paragraphs 63-69), and that the water soluble container is diluted with water up to a dilution ratio of 1:100 to form a solution (see paragraph 80), per the requirements of the instant invention. Specifically, note the Examples in Table 1, which contain 11.5-20% by weight of an alcohol ethoxylate nonionic surfactant, 12.03-20.16% by weight of alkylbenzene sulfonic acid, 34.8-36.36% by weight of lactic acid, 16.3-28.2% by weight of dipropylene glycol n-butyl ether, 4.22-4.64% by weight of water, and adjunct ingredients. Also, note the Examples in Table 1C. Although Zhu is silent with respect to the stability of their water-soluble container, the examiner asserts that the polyvinyl alcohol container disclosed in Zhu would inherently meet the required stability requirements, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-8, 10-12 and 14-20 are anticipated by Zhu, US 2011/0278194.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/834,251 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/834,251 claims a similar disinfecting concentrate comprising a biodegradable solvent-dissolvable container, such as polyvinyl alcohol, at least one carboxylic acid, such as lactic acid, an anionic surfactant, such as sodium laureth sulfate, a nonionic surfactant, a filler, and adjunct ingredients, wherein the disinfecting concentrate has a pH of less than 7, the ratio of carboxylic acid to anionic surfactant is about 1:1 or greater, and the concentrate is diluted with water to form a solution (see claims 1-20 of copending Application No. 18/834,251), as required in the instant claims. Therefore, instant claims 1-20 are an obvious formulation in view of claims 1-20 of copending Application No. 18/834,251.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
July 27, 2026
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